Update: I previously reported on Sebastian Brown Prods. LLC v. Muzooka Inc., a fairly routine trademark priority dispute with a troubling holding. In it, the district court wrote out the last sentence of Section 10 of the Lanham Act, essentially holding that an intent-to-use application cannot be assigned until the trademark is in use. As I explained in more detail in a Trademark Reporter Commentary, that is an incorrect interpretation of Section 10.

The plaintiff’s case was dismissed with prejudice but it succeeded in reviving its case on reconsideration. The plaintiff argued that there was no binding interpretation of Section 10 in the circuit or the district and, had it known what standard the court would ultimately apply, it would have submitted more evidence. The court therefore gave the plaintiff leave to try.

But the effort was, correctly, for naught. The court’s (incorrect) legal standard required that Sebastian Brown Products show it had goodwill in its trademark before the intent-to-use trademark was assigned, defining “goodwill” as use of a mark “in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.” Sebastian Brown had scant evidence of any use before the assignment, a few emails, a few conversations, and a few Skype recording sessions. “[T]hese new allegations do not plausibly demonstrate that Miller used the mark in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind. To the contrary, the activities that Plaintiff alleges are analogous to uses of a mark that the Ninth Circuit has held insufficient to convey trademark rights.”

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

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